The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Tino di Febo of Città Sant’Angelo, Pescara, Italy, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with French Connexion (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2013. On March 15 and 19, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 20, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amended Complaint on March 22, 2013.
On March 22, 2013 the Center notified the Parties that the Complaint was filed in French but that according to the information received from the Registrar the language of the Registration Agreement is English. Accordingly, the Complainant submitted the Complaint translated in English on March 27, 2013. The Respondent did not submit any comment. The Center thus proceeded in English only. As the Respondent is Italian and the Complainant has not reiterated its original request to hold the proceedings in French but has translated its Complaint and filed it in English, as further the cost of that translation has been the main reason that was invoked in the original request to hold the proceedings in French, the Panel does not have to take a decision on the language of the proceedings, that will be in English.
The Center verified that the Complaint together with the amended Complaint and translated Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response upon extension was April 26, 2013. The Response was filed with the Center on April 24, 2013.
Between April 5 and April 15, 2013, the Respondent exchanged email communications with the Registrar copying the Center.
The Center appointed Prof. François Dessemontet as the sole panelist in this matter on May 3, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is an extremely well-known company manufacturing and selling tires, maps and travel guides as well as hotel-restaurant guides. Michelin has marketing operations in over 170 countries and has hired over 113 400 employees throughout the world.
Michelin owns inter alia the following trademarks registrations:
a) MICHELIN, international trademark N° 348615, valid for Italy, dated July 24, 1968, for classes of goods 1, 6, 7, 8, 9, 12, 16, 17 and 20;
b) MICHELIN, community trademark N° 004836359, dated January 4, 2006 for classes of goods and services 1, 3, 5, 6, 7, 8, 9, 11,12, 14, 16, 17, 18, 20, 21, 24 25, 26, 28, 34 and 39.
The Complainant and its subsidiaries and affiliates operate, among others, domain names such as registered on December 1, 1993, and registered on August 28, 1997. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the disputed domain name is confusingly similar to the Complainant’s trademarks MICHELIN. The disputed domain name reproduces the trademark MICHELIN in its entirety. The extension “.tel” should not be taken into consideration when examining the similarity between Complainant’s trademarks and the disputed domain name. The mere adjunction of a generic TLD such as “.tel” would be insufficient to avoid finding a confusing similarity.
Further, the Complainant has used its trademarks with a great variety of services and products in Italy and elsewhere. As a consequence the public perceives the goods and services offered under that mark as being those of the Complainant. The public will assume that the disputed domain name would be owned by the Complainant or at least assume that the owner is related to the Complainant.
Moreover, the Respondent is not affiliated with the Complainant and has not been authorized to use and/or to register its trademark, nor to seek registration of any domain name incorporating that mark. Therefore, the Respondent has no rights or legitimate interests in respect of the disputed domain name. No prior rights or legitimate interests may be invoked by the Respondent. No legitimate activity could be nor has been developed under the brand MICHELIN and through the use of the disputed domain name. “Michelin” is no generic word in Italian.
The registration by the Respondent must have been made in bad faith, as MICHELIN is a well-known mark world wide. The only conceivable intention of the Respondent may have been to prevent the Complainant from registering the disputed domain name, which is evidence of his bad faith. A finding of bad faith is possible even if the Respondent only holds his domain name in a passive way, just redirecting the hitting Internet users to his email address. The Respondent did not provide any evidence of actual or intended good faith use of the disputed domain name.
For all those reasons, the Complainant prays that the disputed domain name be transferred to it. B. Respondent
The Respondent has submitted a text under the title “Counter-arguments” on April 24, 2013, after having requested an extension of the deadline of 10 days, while an extension of two days was granted by the Center. Previous e-mails copied to the Center exchanged between the Respondent and the Registrar appear not to bear on the issues concerning the disputed domain names, but on the lock having been applied to other domain names also belonging to the Respondent. Therefore, the Panel will deal only with the arguments that were raised in the Counter-arguments of April 24, 2013.
First, the Respondent mentions that the disputed domain name has been regularly registered in April 2012 after the non-renewal by the prior owner.
Second, the Respondent mentions that he has never used the disputed domain name with a view to create a confusion between the owner of the trademark MICHELIN and his own services, since the services he would offer are quite different from the ones of the Complainant.
Third, the Respondent argues that the Complainant attempts to gain a protection for its trademark in all areas, although only particular services and goods belonging to the classes recited above fall under the legal protection afforded to the trademark MICHELIN. In fact, the Complainant would attempt to enjoy a monopoly on the search engines and for all business activities.
Finally, the Respondent mentions that the trademark MICHELIN derives from a well-known family name and the protection thereof should not be extended across the board to all social and economic activities. In that connection, the Respondent mentions that the Complainant left the disputed domain name unregistered, and that it would ensue that everyone and all are free to register it.
For all these reasons, the Respondent prays that the transfer of the disputed domain name be rejected. 6. Discussion and Findings
Under the applicable Rules, three criteria must be met for a Panel to order the transfer of a disputed domain name. The domain name must be identical or confusingly similar to a valid trademark. The Respondent must fail to show a right to the domain name or legitimate interests for its use. Finally, the domain name must have been registered and used in bad faith. A. Identical or Confusingly Similar (Policy, par. 4(a)(i); Rules par. 3 (b)(viii), (b)(ix)(1))
The incorporation of a trademark in a domain name is usually sufficient to create a domain name “confusingly similar” to the trademark, as is pointed out by the Counsel for the Complainant with a citation of RapidShare AG, Christian Schmid v. InvisibleR, Domain Admin.,WIPO Case No. D2010-1059, A generic TLD such as “.tel” is irrelevant to dispel the risk of confusion (see Titoni AG v. Runxin Wang,WIPO Case No. D2008-0820, and Alstom v. Itete Peru S.A., WIPO Case No. D2009-0877).
The fact that MICHELIN is a patronymic trademark, that is a trademark originating in the name of physical person, is averred. Such is, however, the case with many famous trademarks in the present word, such as Hewlett Packard or Louis Vuitton, Toyota the most valuable automotive trademark in 2012 (see ), Ford, Mercedes-Benz, Daimler, Porsche, Citroën, Renault, etc. There can be no doubt that these marks originating in the name of a family or individual are as deserving of protection as any other trademark, especially when they are famous as is MICHELIN.
The Panel finds that the first element of the Policy has been established. B. Rights or Legitimate Interests
The Complainant mentions that MICHELIN is a worldwide famous trademark. The Respondent objects that its validity would be limited to the goods and services claimed in the registration of that trademark by reference to the various classes under the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.
To the extent the Respondent’s arguments here are directed to tend to demonstrate any rights or legitimate interests to the disputed domain name, the Panel notes that the Respondent’s argument seems to stem from a misconception of the notion of “famous trademark” as opposed to the sheer “well-known trademark”. Art. 6bis of the Paris Convention for the protection of Industrial Property as amended mentions only the “well known trademark” and prohibits a parallel registration of well-known trademarks in different countries members of the Union of Paris for the protection of industrial property for similar wares and services. However, MICHELIN is not only a well-known trademark within the meaning of Art. 6bis Paris Convention, but also a famous trademark that will be protected in most European countries under the provision corresponding to Art. 4 (4)(a) of the European Directive 2008/95/CE of 22 October 2008, that reads : “4. Any Member State may, in addition, provide that a trade mark shall not be registered or, if registered, shall be liable to be declared invalid where, and to the extent that (a) the trade mark is identical with, or similar to, an earlier national trade mark within the meaning of paragraph 2 and is to be, or has been, registered for goods or services which are not similar to those for which the earlier trade mark is registered, where the earlier trade mark has a reputation in the Member State concerned and where the use of the later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark”. The protection of famous trademark is thus independent of the classes of goods or services for which they are protected (see for all J. Azéma, Marques renommées et marques notoires en droit européen et en droit français, in J. de Werra ed., Marques notoires et de haute renommée/ Well-Known and Famous Trademarks, Genève 2010, 23 ff.). In Italy, the former Directive 89/104/CE of the European Union with the same content in this regard has lead to the adoption of Art. 12 (1)(f) of the Code of Intellectual Property that provides that “signs are not new, pursuant to Article 7, if as of the date of filing the application any of the following applies: (f) they are identical ... or similar to trademarks already registered by others in the country or having effect in the country following filing of an application on an earlier date or having effect from an earlier date based on the right of priority or of a valid claim of seniority for goods or services even if not similar, when the earlier trademark has, in the [European Union], in case of a Community trademark, or in the country, a reputation and when the use without due cause of the later trademark would take unfair advantage [of], or be detrimental to, the distinctive character or the reputation of the earlier trademark” (emphasis by the Panelist)(see S. Mulder, Well-known and famous trademark protection in Italy, in World Trademark Review 2008, 72 ff.). Therefore, there is no doubt that the argument put forward by the Respondent on the alleged dissimilarity of his services and the ones offered as well as goods by the Complainant cannot be followed as it is contrary to the present Italian and European law. Besides, and considering the elements of paragraph 4(c) of the UDRP, the Panel notes that the Respondent did not precise (let alone submit any evidence) what services exactly he intends to offer should once his domain name be active, which in itself is enough to prevent his defense to be accepted as it does not appear based in fact.
The Panel finds that the second element of the Policy has been established. C. Registered and Used in Bad Faith
MICHELIN being obviously a famous trademark, it may be simply inferred from the circumstances of the case that the Respondent could not ignore the existence of MICHELIN as a protected trademark at the time he registered the disputed domain name. Would he have believed in good faith that the protection did not extend to any use of that famous trademark likely to cause a confusion, but only to the registration and use of the disputed domain name for similar goods and services, the Respondent would have committed a mistake of law. A well-known principle of European continental law is that “error iuris nec nocet nec prodest” (“no one can benefit or be harmed only by reason of a mistake as to the rule of law”). Some exceptions may apply in particular contexts such as the conclusion of a contract or criminal law; those exceptions need not be examined here as they are not present in the facts of the case. The consultation of a lawyer would immediately have dispelled that error on the Italian and European law, but such consultation appears not even to have been necessary. In all probabilities, the Respondent who seems to be well aware of the mechanism through which domain names are registered and exploited might have found the necessary information by some click on motor engines. His bad faith derives from the nature of the registration and the parallel registration of another well-known trademark (UNIROYAL) in similar circumstances (see MC Projects B.V. Maastricht, succursale de Granges-Paccot v. Tino Di Febo,WIPO Case No. D2013-0520).
An additional element of bad faith results from the conduct of the Respondent, who does not use nor, apparently, prepares to use the disputed domain name.
Nonetheless, the Panel does not follow the Complainant’s argumentation when its Counsel notes that the “Respondent (would have not availed) himself of his right to respond to Complainant”, since the file shows that letters by the Respondent’s Italian Counsel were sent in Fall 2012. Further, the Panel does not admit that the fact of “Michelin” not having any definite meaning in Italian would be relevant in the present case. A famous trademark may also stem from a generic word having acquired a second meaning (such as “Play Boy”). Perhaps the intended argument was actually that the trademark MICHELIN cannot be proven to have degenerated in a generic word in Italy. However, even that modified argumentation might well be inapposite. For example, there is no doubt that the “Michelin” used by itself connotes an excellent restaurant guide in all French-speaking countries. Nevertheless, that fact does not deprive the trademark MICHELIN of the legal protection afforded to famous trademarks, but rather reinforces the correct understanding that the trademark MICHELIN is famous.
Based on the record, the Panel finds that the disputed domain name was registered and is being used in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
François Dessemontet
Sole Panelist
Date: May 8, 2013
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